In making a §103 rejection, Examiners almost always cite to portions of the references, so I suppose that's making a finding about the "scope and content of prior art." Some Examiners do a better job than others in explaining the differences between the art and the claims, but I can usually read in between the lines here.
Yet in the applications I've prosecuted, I don't recall a single instance of the Examiner ever discussing the level of skill in the art. Furthermore, such findings are also rare in the BPAI cases that I've read. Yet the Board doesn't consider this lack of an Examiner finding to be an error.
How can this be? Why is there such a disconnect between the law and Board-sanctioned Examiner behavior? Are we practitioners wasting paper by arguing that the Examiner hasn't made a prima facie case of obviousness because the Examiner didn't make findings of fact on level of ordinary skill? Or, worse yet, do we look uninformed when we make this argument, because the Examiner isn't really required to do this after all?
The answer seems to be: Yes, you're probably wasting time dinging the Examiner for this. According to the BPAI, case law allows the Examiner to take some shortcuts or make some assumptions about level of ordinary skill.
An Applicant brought up this very issue in an appeal to the BPAI, and the Board had this to say on the subject:
Appellant faults the Examiner for failing to ascertain the level of skill in the art, citing Graham. Reply Br. 4. In the absence of other evidence addressing the level of skill, it is presumed to be represented by the references themselves. See In re Oelrich, 579 F.2d 86, 91 (CCPA 1978) ("the PTO usually must evaluate both the scope and content of the prior art and the level of ordinary skill solely on the cold words of the literature"); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (Board did not err in adopting the approach that the level of skill in the art was best determined by the references of record.)This seems to be consistent with the MPEP, if you read it carefully:
(Ex parte Atkin, p. 21.)
Office Personnel fulfill the critical role of factfinder when resolving the Graham inquiries....When making an obviousness rejection, Office personnel must therefore ensure that the written record includes findings of fact concerning the state of the art and the teachings of the references applied. In certain circumstances, it may also be important to include explicit findings as to how a person of ordinary skill would have understood prior art teachings, or what a person of ordinary skill would have known or could have done.So the MPEP says findings about level of ordinary skill are required only sometimes. Another statement from §2141 says that the finding can be implicit rather than explicit:
(MPEP 2141.)
Any obviousness rejection should include, either explicitly or implicitly in view of the prior art applied, an indication of the level of ordinary skill.Although no case law is cited, this statement is consistent with In re GPAC, one of the cases cited by the Board in Ex parte Atkin (noted above).
Given that the law doesn't really require the Examiner to specifically discuss level of ordinary skill in the art, I'm not sure that boilerplate telling him that he does is useful.
It's a bit laate to post this, but I disagree. The law requires the Examiner to find that the references define an appropriate level of skill. The case law also requires the Examiner to explain that the Examiner's skill level finding, or lack of explicit finding, did not impact the ultimate conclusion of obviousness.
ReplyDeleteCan you cite to a case? I don't read In re GPAC or In re Oelrich to require such a statement from the Examiner.
DeleteM.P.E.P. 2141.03(II), citing Chore-Time Equipment, Inc. v. Cumberland Corp., 713 F.2d 774, 218 USPQ 673 (Fed. Cir. 1983) and Okajima v. Bourdeau, 261 F.3d 1350, 1355, 59 USPQ2d 1795, 1797 (Fed. Cir. 2001), merely states that specifying a particular level of skill is not necessary where the prior art itself reflects an appropriate level. The Office is still required to set forth findings of fact that explain WHY the cited references reflect an appropriate LEVEL of skill.
ReplyDeleteThe Examiner must also explain how its failure to make a finding on level of skill did not influence the Office's ultimate conclusion of obviousness under section 103. The issue in Chore-Time was whether or not the appellate court felt that the failure to explicitly determine the level of ordinary skill was reversible error by the trial court that required the case to be re-tried. This was clarified in Ruiz v. A.B. Chance Co., 234 F.3d 654, 666, 57 U.S.P.Q.2D 1161, 1168 (Fed. Cir. 2000), where the Federal Circuit stated:
"Some of our cases indicate that the failure to make explicit findings on the level of ordinary skill is not always reversible error. See, e.g., Kloster Speedsteel AB v. Crucible Inc., 793 F.2d 1565, 1574, 230 USPQ 81, 86 (Fed. Cir. 1986); Union Carbide Corp. v. American Can Co., 724 F.2d 1567, 1573, 220 USPQ 584, 589 (Fed. Cir. 1984); Chore-Time Equip., Inc. v. Cumberland Corp., 713 F.2d 774, 779 n.2, 218 USPQ 673, 676 n.2 (Fed. Cir. 1983)" (emphasis added). However, as the Federal Circuit noted in Custom Accessories v. Jeffrey-Allan Indus., 807 F.2d 955 (Fed. Cir. 1986), in those cases, "it was not shown that the failure to make a finding or an incorrect finding on level of skill influenced the ultimate conclusion under section 103 and, hence, constituted reversible error." Custom Accessories, 807 F.2d at 963, 1 USPQ2d at 1201."
Therefore, the Office must make an explicit finding on level of ordinary skill in the art because the failure to make a finding or an incorrect finding on level of skill has an enormous influence on the ultimate conclusion under section 103 during a patent prosecution. When the Office chooses one or more prior art references to combine, the Office is taking the position that one of ordinary level of skill in the art would have chosen these very references for combination. However, the Office is using these very references to define the level of ordinary skill in the art and that has an enormous influence on the ultimate conclusion of obviousness under section 103. Ultimately, this comes down to a "which came first, the chicken or the egg?"-type of inquiry. In this situation, the snake is eating its own tail if the Office is implicitly stating that the level of ordinary skill is determined by the prior art references selected by the Office (references which are selected via a hindsight-based search of the prior art) while simultaneously saying that one of ordinary skill in the art would have chosen these very references. As the level of one of ordinary skill in the art is a prism or lens through which a patent examiner views the prior art and the claimed invention, it is a tool to maintain objectivity and it focuses the mind of the patent examiner away from what would seem obvious to the patent examiner who conducts the examination of the patent application with hindsight. A 103 rejection is based upon what would be obvious to one of ordinary skill in the art at the time of the invention and not what is obvious to the patent examiner who is reviewing patent claims using hindsight. Thus, the Office must make a determination of the level of ordinary skill in the art that does not rely upon the level of ordinary skill in the art being defined by the prior art references already chosen by the Office because the failure to make a finding or an incorrect finding on level of skill enormously influences the Office's ultimate conclusion under section 103 during a patent prosecution.
DeleteThe lack of any finding on the level of skill by the Office has an enormous influence on the ultimate conclusion under section 103 and, hence, constitutes error by the Office. The KSR decision re-affirmed Graham's requirement that there be a determination of the ordinary level of skill in the art. During prosecution, as part of the Office meeting its burden in making out a prima facie case of obviousness, the Office must make a determination of the level of ordinary skill in the art. At the very least, the Office must make findings of fact that explain why the references allegedly reflect an appropriate level of skill.
>Office is still required to set forth findings
ReplyDelete>of fact that explain WHY the cited references
>reflect an appropriate LEVEL of skill.
...
>because failure to make a finding or an
>incorrect finding on level of skill has an
>enormous influence on the ultimate conclusion
>under section 103
So ... case law says that failure to make such findings is not automatically reversible error, since it's possible that such failure doesn't affect the outcome.
But you're saying that in the real world, failure to make such findings does affect the outcome. Your position has intuitive appeal.
But I dunno. I still think the Fed Cir. might require you to make a showing that the failure affected the outcome.
As a side note, from what I can tell the *level* of skill isn't really the issue for most cases involving obviousness. I think the second part -- defining "the art", ie, the field of invention -- has a much bigger influence on the outcome. And Applicants routinely challenge the Examiner's findings/lack thereof about *which* art, by making non-analogous art arguments.
"But you're saying that in the real world, failure to make such findings does affect the outcome. Your position has intuitive appeal."
ReplyDeleteAt least when it comes to patent prosecution. As I said, it's a snake eating its own tail type of thing. Nothing but circular reasoning from the Examiner. The Examiner chooses the references. The Examiner says the references define the level of skill and therefore one of ordinary skill would have chosen these very references to combine.
I believe level of skill arguments are highly underutilized. They typically fail because applicants fail to give reasons why the obviousness outcome is affected.